March 3, 2010

Patents Obvious Over Same Prior Art Raised During Ex Parte Reexamination

Dissent finds a bias against protecting an invention that “does not advance rocket science or cancer medicine.”

A divided Federal Circuit panel affirmed summary judgment that claims in Media Tech’s two patents to trading cards with attached items or fragments of memorabilia were obvious over prior art that had been considered in reexamination proceedings: a Marilyn Monroe trading card with diamond, hotel stationary with piece of sheet one of the Beatles slept on, a holy card of a Capuchin friar with attached piece of his clothing, and a James Dean greeting card with jeans material. (In an interesting decision on petition to dismiss the reexamination because the unique cards with attached objects were not “printed publications,” the PTO held there was a “colorable argument” that they were so that the reexamination could proceed; the patent owner would be able to raise the issue again on appeal. The decision noted evidence showed public availability and accessibility. Reexamination certificates were issued without an appeal being taken.) The panel found the claims obvious as an expert opinion showed sports card designers adopted ideas from other card genres, with no mention of the PTO’s decision to issue reexamination certificates after considering the same prior art.

Media Tech argued inability to predict a trading card would convey authenticity to the memorabilia, but the court held acceptance was due to the history and reputation of the trading card industry. Media Tech also argued “unpredictable solution,” but the court found the variations available to present a trading card and memorabilia were limited by a card’s dimensions. The patentee’s combined secondary objective evidence of long-felt need and failure of others, commercial success, initial skepticism and later industry recognition, and unexpected results failed to weigh in favor of patentability. Success of cards with non-memorabilia attachments refuted the failure of others claim, while the commercial success of the memorabilia cards could have been attributed to other factors like the particular assembly or packaging of the cards. The panel dismissed the unexpected results argument as arguing instead that the commercial success was unexpected, and did not discuss the evidence of initial skepticism and later industry recognition.

In dissent, Judge Rader berated the majority for harboring a bias against low-tech inventions. He characterized the prior art as “wholly irrelevant” and the secondary indicia, particularly the evidence of initial skepticism and later industry accolades that the panel had not deigned to discuss, as “significant.” At the least, Judge Rader found the record undeserving of summary judgment.

Media Technologies Licensing, LLC. v. Upper Deck Co., 2009-1022 (Fed. Cir. Mar. 1, 2010)